Update: The Leahy-Smith America Invents Act

Although the America Invents Act (AIA) involves US laws, the ramifications have been relevant to applicants all over the world for nearly two years. When the final changes of the AIA came into effect on March 16, 2013, applicants scrambled to file in large numbers as the Act included a number of provisions that would make it more difficult to obtain patent protection in the United States.

Read on to see how the uptick in filing numbers prior to March 16, 2013 is now contributing to a higher-volume filing period in September and October of 2015.

First, a bit of background on the America Invents Act

Before we discuss an increase in filing numbers this fall, here is a bit of background on the America Invents Act. One of the most significant changes that occurred in implementing this new law was that the US lost its unique status as a first-to-invent jurisdiction. Previously, patent rights were granted to the first inventor who conceived of the invention and reduced it to practice (or diligently worked towards reducing it to practice). Starting on March 16, 2013, the first inventor to file got the patent rights. Now, the date of invention is irrelevant.

This change was monumental for the United States, as it aligned the US with almost every other country in the world. The next change that occurred on March 16, 2013 (hard to believe almost 2 years ago!), was the definition of prior art for assessing patentability. Previously, prior art included various uses (including sale) in the US, or written disclosures anywhere in the world. The AIA changed this so that any form of disclosure anywhere in the world forms part of the prior art.

Lastly, the change to first-inventor-to file meant that interference proceedings were no longer required. Instead, a derivations proceeding was available. This enabled inventors to challenge the owner of a patent with an earlier filing date, where the challenging inventor believed the earlier filer derived the invention from the challenging inventor.

If this happened 2 years ago, why is the America Invents Act relevant now?

Due to the changes outlined above, there was an increase in US patent filings immediately before the effective date of the AIA on March 16, 2013. These changes made obtaining patent protection in the US more difficult, so applicants from around the world scrambled to obtain a US filing date prior to this date in order to have their applications examined under the old rules.

The key to understanding why and if there will be an uptick in PCT national phase entries in the upcoming months is in understanding the concept of priority dates. The 30 month PCT national stage entry date is calculated from the earliest priority date, (the very first patent application filed in respect of the invention anywhere in the world). A PCT application may claim priority from any number of earlier filed applications, each of which has a separate priority date.

It’s helpful to look at one of the United States most prolific patent filers, Apple Inc., to see when these priority dates will fall. Apple filed multiple US applications on March 15, 2013 which they later used as priority documents for 60 subsequently filed PCT applications. Around half of these 60 PCT applications fall in the month of September 2015 and range from as early as October 2014.

Therefore, it’s safe to say that not all PCT applications which claim priority from applications filed in March 2013 are due for national stage entry 30 months later, in September 2015. It is only true for those PCTs whose earliest priority date fell in the month of March 2013.

Let’s cut to the chase, how will this effect the numbers in September 2015?

An accurate prediction of the cases due for national stage entry in September 2015 are those that were published 12 months earlier. The publication date occurs roughly 18 months from the earliest priority date. So, applications in which the earliest priority date was in March 2013 would roughly be published in September 2014.

A realistic view would be to take the two months of September and October 2014 and see how those months compare with the average.

In 2014 the total number of published applications filed by US-based applicants was 67,500. This equates to an average of 5,625 per month or 11,250 over two months. So we’d expect September and October 2014 to be around that figure.

The publication numbers for US based applicants were 10,845 in September 2014 and 7,569 in October 2014, giving a total of 18,414 for that two month period.

As compared to the average, cases due for national stage entry in September 2015 are likely to be 93% higher than average, those due in October 2015 are likely to be 35% above average and over the September/October two month period we’re looking at a 65% increase.

Please get in contact with your nearest inovia office if you have any questions regarding this topic. While this is a higher-volume filing period, there is no need to worry. inovia is capable of handling any of your foreign filing needs if you plan ahead to ensure instructions are received on time. You can learn more about the ramifications of the AIA by downloading inovia’s complete guide here.